USPTO issues flurry of new rules to implement ‘America Invents Act’

Published on August 10th, 2012 | By: Eileen De Guire

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US patent law is transforming as a result of the passage of the America Invents Act. The US Patent and Trademark Office is conducting meetings in eight cities to introduce patent law changes. Credit: USPTO.

The US Patent and Trademark Office has published a flurry of new rules in the Federal Register to implement the patent reforms stipulated by the Leahy-Smith America Invents Act (H.R. 1249) that became the law of the land last September. The most recent of these was published on Monday.

The rules have been rolled out in chunks with time allowed for public comment. The proposed rules changes that will implement the law’s key first-to-invent provision are open for public comment until Oct. 5, 2012.

The new law represents a fundamental reform of the US patent law, one that has been about 30 years in the making, with the Congress taking several intermediate stabs at reform since 1980.

The first-to-invent aspect represents a fundamental shift in philosophy for the US patent system, and there are several other foundational changes that comprise a complete overhaul of the engine that drives the US patent system. The bottom line is that AIA is a complete reworking of the law regarding patentability and patent enforceability. Because the overhaul is so comprehensive, the USPTO is conducting an “AIA Roadshow” in eight cities across the nation during September, starting with Minneapolis on Sept. 10. More information on AIA and the roadshow events is available on the USPTO website.

The new law adopts a “first-to-file” system and throws out the old “first-to-invent” system. It also aims to improve patentability and enforceability by boiling the law down to four core tenets:

• Sufficient differentiation;

• Sufficient disclosure;

• Sufficient definiteness; and

• Sufficient concreteness.

An article (pdf) published in the Winter 2012 issue of the American Intellectual Property Law Association‘s AIPLA Quarterly Journal explains the new law in clear, candid terms (belying the bad rap attorneys get for writing in obfuscating “legalese”). The author, Robert Armitage, is senior vice president and general counsel for Eli Lilly and Co., a business that depends on innovation and patent protection for its competitive edge. Armitage, it turns out, has been a leader in the intellectual charge for patent reform, with publications on the topic going back to at least 1982.

Armitage lays out the problems with the old system, which is based on a collection of laws enacted before 1980 and going back to the late 18th century. Let’s look at his analysis.

Armitage writes, “From 1836 until the start of this century, determining the patentability of an invention consisted exclusively of a secret, non-public dialogue between the patent applicant and the patent examiner.” It was not unusual, for example, for a patent to be issued on the same day that the public got wind that the USPTO was considering issuing a patent. More importantly, information that was needed by the patent examiner could be secret or private and unavailable to the public. The onus was on the applicant to provide sufficient disclosure to the examiner to assess patentability and the public was excluded from the process.

A consequence, he says, is that the disclosed information could have an “absurdly subjective character” that could leave the examiner guessing as to whether the inventor had been candid in his disclosure, and to pure speculation on the part of the inventor as to what the “contemplated” or “best mode” of the invention might be.

Another consequence of the secret process is that it prevented discovery of other (also perhaps secret) information that could null the invention’s patentability, that is, whether it might already have been done. But, with the public excluded from the process, there was no mechanism for discovery.

Secrecy in the process meant there was no “meaningful opportunity for a member of the public to participate in the decision of the USPTO” and no way to “contest a patent examiner’s clearly incorrect determination of patentability.”

The old system allowed for wild variations in patent expiration dates, with patents often expiring 30 to 50 years after the initial patent application was filed. Prior to 1995, patents expired 17 years after the patent was actually issued, not the date when the patent application was filed. Inventors were rewarded for procrastinating the actual filing with longer patent protection terms.

The protection offered by the pre-1980 law left patent awardees vulnerable to infringers. In an odd twist on the US criminal justice philosophy of “innocent until proven guilty,” patent applicants used to be subject to the burden of having to defend themselves against patent infringers who could question the judgments of the patent applicant during the patenting process. Even if the patent were actually valid, it could still be “declared unenforceable due to a supposed fraud arising from the patent applicant’s conduct before the USPTO.”

Armitage says the AIA transforms the US patent system from a nontransparent, subjective, unpredictable and complex one to the opposite—one with “near-complete transparency, objectiveness, predictability and simplicity.” He writes,

This profound reversal in the patenting process—with the public’s role being transformed from blinded spectator to full participant—was made possible because of the manner in which the AIA rewrites basic rules for patentability of applications for patents and validity of patents once issued. Simply, the AIA limits patentability issues in a manner that renders the new post-grand patent challenge mechanisms administratively feasible.

He goes on to explain that after-the-fact reviews will be limited to questions of law regarding the four core issues of whether the invention is sufficiently differentiated, disclosed, defined and concrete from existing inventions, that is, the “prior art.”

Bottom line: the AIA is structured to improve patentability (protect against invalidity) and reduce unenforceability. There are other benefits that provided for in the law, though, including

– The naming of the inventor can be changed without being accused of “deceptive intention,” which heretofore could call a patent’s validity into question.

– Patent applicants can easily correct the required “oath” or declaration at any time, which eliminates any shortcomings in the oath as bases for declaring a patent invalid or unenforceable.

– Patents are protected from being invalid or unenforceable on “the basis that ‘best mode’ was not contemplated by the inventor at the time of the patent filing.”

– All restrictions or limitations based on “deceptive intention” are eliminated, which is expected to “curb unenforceability and [open] remedial measures in the patent statute.”

The Armitage article goes on to examine the substantive changes in detail, breaking down the essential pieces in the 133-page document. His concluding remarks reveal how sweeping this reform is

“Thus, without question, transparent, objective, predictable and simple are four words that should come to describe the hallmarks of the new patent law arising from this historic legislative achievement. Those four words suggest a fifth that appears to be equally apt. Remarkable.”

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